USPTO Patents Application 09890486

United States Patent and Trademark Office

UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office

Address: COMMISSIONER FOR PATENTS
P.O. Box 1450

Alexandria, Virginia 22313-1450
www.uspto.gov

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

CONFIRMATION NO.

09/890,486

12/28/2001

Wilhelmus Johannes Everardus Van Den Dungen

3135-011126

1769

34082 7590 05/03/2004

zarley law firm p.l.c.
capital square

400 LOCUST, SUITE 200
DES MOINES, IA 50309-2350

EXAMINER

BECKER, DREW E

ART UNIT

PAPER NUMBER

DATE MAILED: 05/03/2004

Please find below and/or attached an Office communication concerning this application or proceeding.

PTO-90C (Rev. 10/03)

Application No.

Applicant(s)

09/890,486

VAN DEN DUNGEN ETAL

Office Action Summary

Examiner

Art Unit

Drew E Becker

1761

- The MAILING DATE of this communication appears on the cover sheet with the correspondence address «
Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) FROM
THE MAILING DATE OF THIS COMMUNICATION.

- Extensions of time may be available under the provisions of 37 CFR 1 .1 36(a). In no event, however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.

- If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely.

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 1 33).
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent term adjustment. See 37 CFR 1.704(b).

3) D Since this application is in condition for allowance except for formal matters, prosecution as to the merits is

closed in accordance with the practice under Ex parte Quay/e, 1935 CD. 1 1 , 453 O.G. 213.

Disposition of Claims

4) IEI Claim(s) 31-57 is/are pending in the application.

4a) Of the above claim(s) 31-46 is/are withdrawn from consideration.

5) D Claim(s) is/are allowed.

6) [X] Claim(s) 47-57 is/are rejected.

7) D Claim(s) is/are objected to.

8) D Claim(s) are subject to restriction and/or election requirement.

Application Papers

9) D The specification is objected to by the Examiner.

10O The drawing(s) filed on is/are: a)D accepted or b)D objected to by the Examiner.

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1 .85(a).

Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
11 )□ The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.

Priority under 35 U.S.C. § 119

12)Q Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 1 19(a)-(d) or (f).
a)D All b)Q Some * c)D None of:

1 .□ Certified copies of the priority documents have been received.

2. D Certified copies of the priority documents have been received in Application No. .

3. D Copies of the certified copies of the priority documents have been received in this National Stage

application from the International Bureau (PCT Rule 17.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.

Status

1)13 Responsive to communication(s) filed on 22 April 2004 .
2a)£3 This action is FINAL. 2b)D This action is non-final.

Attachment(s)

1) □ Notice of References Cited (PTO-892)

2) CH Notice of Draftsperson's Patent Drawing Review (PTO-948)

3) □ Information Disclosure Statement(s) (PTO-1449 or PTO/SB/08)

4) Q Interview Summary (PTO-413)

5) □ Notice of Informal Patent Application (PTO-152)

6) □ Other: .

Paper No(s)/Mail Date.

Paper No(s)/Mail Date

U.S. Patent and Trademark Office
PTOL-326 (Rev. 1-04)

Office Action Summary

Part of Paper No./Mail Date 0404

Application/Control Number: 09/890,486 Page 2

Art Unit: 1761

DETAILED ACTION

Election/Restrictions

1 . This application contains claims 31-46 drawn to an invention nonelected with
traverse. A complete reply to the final rejection must include cancelation of nonelected
claims or other appropriate action (37 CFR 1.144) See MPEP § 821.01.

Claim Rejections - 35 USC §112

2. The following is a quotation of the second paragraph of 35 U.S.C. 1 12:

The specification shall conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention.

3. Claim 57 is rejected under 35 U.S.C. 1 12, second paragraph, as being indefinite
for failing to particularly point out and distinctly claim the subject matter which applicant
regards as the invention.

4. Claim 57 provides for the use of "dry collagen", but, since the claim does not set
forth any steps involved in the method/process, it is unclear what method/process
applicant is intending to encompass. A claim is indefinite where it merely recites a use
without any active, positive steps delimiting how this use is actually practiced.
Furthermore, "dry collagen" is already recited in parent claim 49.

Claim 57 is rejected under 35 U.S.C. 101 because the claimed recitation of a
use, without setting forth any steps involved in the process, results in an improper
definition of a process, i.e., results in a claim which is not a proper process claim under
35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and
Clinical Products, Ltd v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).

Application/Control Number: 09/890,486
Art Unit: 1761

Page 3

Claim Rejections - 35 USC § 103

5. The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
obviousness rejections set forth in this Office action:

(a) A patent may not be obtained though the invention is not identically disclosed or described as set
forth in section 102 of this title, if the differences between the subject matter sought to be patented and
the prior art are such that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said subject matter pertains.
Patentability shall not be negatived by the manner in which the invention was made.

6. Claims 47-48 and 52-55 are rejected under 35 U.S.C. 103(a) as being
unpatentable over WO 99/13729 in view of WO 93/12660.

WO 99/13729 teaches a method of making sausages by co-extruding meat and a skin
(page 11, lines 32-38), separating the sausage string into separate units (page 12, line
5), then subjecting the units to a coagulation treatment with liquid smoke (page 12, line
36), WO 99/13729 does not recite the skin being 8-10% collagen and a pre-coagulation
treatment. WO 93/12660 teaches a method of making sausage by co-extruding meat
and collagen (page 3, lines 3-5), the use of 4-10% collagen (page 6, line 4), and
coagulation prior to separation (page 3, line 12 to page 5, line 14) . It would have been
obvious to one of ordinary skill in the art to incorporate the collagen and pre-treatment
of WO 93/12660 into the invention of WO 99/13729 since both are directed to sausage
making, since WO 99/13729 already included co-extrusion (page 11, lines 32-38) and
coagulation (page 12, line 36), since collagen was a commonly used material for
sausage skin as shown by WO 93/12660, and since the pre-treatment of WO 93/12660
would have further strengthened the sausage of WO 99/13729 and thus prevented
possible damages during processing.

Application/Control Number: 09/890,486 Page 4

Art Unit: 1761

7. Claims 49-51 and 57 are rejected under 35 U.S.C. 103(a) as being unpatentable
over WO 99/13729, in view of WO 93/12660, as applied above, and further in view of
Henderson et al [Pat. No. 3,551,535].

WO 99/13729 and WO 93/12660 teach the above mentioned concepts. WO 99/13729
and WO 93/12660 do not teach the use of dry, fibrous collagen. Henderson et al teach a
method of making sausage skins by use of dry, fibrous collagen (column 6, Example I).
It would have been obvious to one of ordinary skill in the art to incorporate the dry,
fibrous collagen of Henderson et al into the invention of WO 99/13729, in view of WO
93/12660, since all are directed to sausage making, since WO 99/13729 already
included co-extrusion of a skin (page 11, lines 32-38), since WO 93/12660 already
included co-extrusion of collagen with additives such as coagulants and cross-linking
agents (page 3, line 1 to page 5, line 15), and since the dry collagen of Henderson et al
prevented air pockets and provided improved homogenization as compared to
conventional collagen skins (column 1 , lines 30-73).

8. Claim 56 is rejected under 35 U.S.C. 103(a) as being unpatentable over WO
99/13729, in view of WO 93/12660, as applied above, and further in view of Kobussen
etal [Pat. No. 6,054,155].

WO 99/13729 and WO 93/12660 teach the above mentioned concepts. WO 99/13729
and WO 93/12660 do not teach the use of dipotassium phosphate. Kobussen et al
teach a method of making sausage by using dipotassium phosphate as a coagulant
(column 3, line 20). It would have been obvious to one of ordinary skill in the art to
incorporate the dipotassium phosphate of Kobussen et al into the invention of WO

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Art Unit: 1761

99/13729, in view of WO 93/12660, since all are directed to sausage making, since WO
99/13729 already included coagulation with liquid smoke (page 12, line 360, and since
dipotassium phosphate was a commonly used coagulant in sausage making as shown
by Kobussen et al.

Response to Arguments

9. Applicant's arguments filed April 22, 2004 have been fully considered but they
are not persuasive.

The test for obviousness is not whether the features of a secondary reference
may be bodily incorporated into the structure of the primary reference; nor is it that the
claimed invention must be expressly suggested in any one or all of the references.
Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208
USPQ871 (CCPA1981).

In response to applicant's arguments against the references individually, one
cannot show nonobviousness by attacking references individually where the rejections
are based on combinations of references. See In re Keller, 642 F.2d 413, 208
USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir.
1986).

In response to applicant's argument that the examiner's conclusion of
obviousness is based upon improper hindsight reasoning, it must be recognized that
any judgment on obviousness is in a sense necessarily a reconstruction based upon

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Art Unit: 1761

hindsight reasoning. But so long as it takes into account only knowledge which was
within the level of ordinary skill at the time the claimed invention was made, and does
not include knowledge gleaned only from the applicant's disclosure, such a
reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA
1971).

In response to applicant's argument that there is no suggestion to combine the
references, the examiner recognizes that obviousness can only be established by
combining or modifying the teachings of the prior art to produce the claimed invention
where there is some teaching, suggestion, or motivation to do so found either in the
references themselves or in the knowledge generally available to one of ordinary skill in
the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988)and In re
Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992). In this case, it would have
been obvious to one of ordinary skill in the art to incorporate the collagen and pre-
treatment of WO 93/12660 into the invention of WO 99/13729 since both are directed to
sausage making, since WO 99/13729 already included co-extrusion (page 11, lines 32-
38) and coagulation (page 12, line 36), since collagen was a commonly used material
for sausage skin as shown by WO 93/12660, and since the pre-treatment of WO
93/12660 would have further strengthened the sausage of WO 99/13729 and thus
prevented possible damages during processing.

Applicant argues that WO 99/13729 does not teach coagulation after separation.
However, WO 99/13729 clearly teaches separating the sausage links (Figure 1, #2),
applying liquid smoke (Figure 1, #7), then drying the sausage in the lower half of the

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Art Unit: 1761

dryer (Figure 1, #6). In addition, applicant's claim 55 lists "liquid smoke" as a preferred
coagulant. Although WO 99/13729 does not specifically recite coagulation, it was an
inherent effect.

Conclusion

10. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
policy as set forth in 37 CFR 1 . 1 36(a).

A shortened statutory period for reply to this final action is set to expire THREE
MONTHS from the mailing date of this action. In the event a first reply is filed within
TWO MONTHS of the mailing date of this final action and the advisory action is not
mailed until after the end of the THREE-MONTH shortened statutory period, then the
shortened statutory period will expire on the date the advisory action is mailed, and any
extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
the advisory action. In no event, however, will the statutory period for reply expire later
than SIX MONTHS from the mailing date of this final action.

Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Drew E Becker whose telephone number is 571-272-
1396. The examiner can normally be reached on Mon.-Thur. 8am-5pm and every other
Fri. 8am-4pm.

Application/Control Number: 09/890,486

Page 8

Art Unit: 1761

If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Milton Cano can be reached on 571-272-1398. The fax phone number for
the organization where this application or proceeding is assigned is 703-872-9306.

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Drew E Becker
Primary Examiner
Art Unit 1761